Yes, An Independent Invention Defense For Patents Is Completely Feasible

from the you-can-prove-independence dept

Mike has been advocating an independent invention defense against patent infringement for quitesometime now -- that is, in the absence of actual copying, a patent holder should not be able to sue a subsequent innovator. There are plenty of posts going over the rationale for such a defense, and I don't want to rehash those arguments when you can just click on those links above and read the originals.

What I do want to do is address one of the most common concerns with the independent invention defense: feasibility -- in particular, the concern that independence (or dependence) would be too difficult to prove. See, for example, some of the comments on the EFF's push for this:

"Independent arrival" is a vacuous notion, with possible noble intent, but difficult-to-impossible to prove. It would require mind-reading beyond current human abilities.

Or this one:

How on EARTH would a patent holder succeed in court if the defense could just claim ignorance?

The long answer is that our legal system has been dealing with this problem for a long time. Someone shoots and kills someone else. The shooter claims self-defense. Or that it was an accident. Or insanity. You'd think that these defenses would "require mind-reading beyond current human abilities", but as it turns out, judges and juries have done an OK job at sorting it all out. Sometimes people get away with murder, but on the whole, murders have not skyrocketed because of self-defense claims.

One reason is that it's harder to lie in front of a jury than many people think it is, especially when the other side's lawyer can call you out on it.

The other reason is that there's evidence outside of what you tell the jury. If you murder someone, there are witnesses, security cameras, smoking guns, and friends that rat you out. If you're an inventor, you make notes and schematics. You communicate with co-workers and colleagues. You browse the Internet, leaving a browser history and IP log. And if you work for a large corporation, all of your communications and notes are likely logged and archived precisely because of the risk of litigation. That's a lot of evidence that could be used to prove, or disprove, independent invention. Just look at the Apple v. Samsung case, where the jury was able to rely on Samsung's own documents to conclude that Samsung had willfully copied Apple (whether such copying is really a problem is a different question).

Independent Invention and Reproducibility

A corollary of needing proof of dependence is an incentive for patentees to disclose their inventions in a manner that's actually useful to others. The law currently requires patentees to describe enough of their invention to enable someone else to reproduce it, but they certainly don't have any incentive to make it easy to reproduce. Trolls actually have an incentive to obfuscate what a patent covers and spring it on a business only after that business has sunk billions of dollars into developing their own product.

By contrast, if a patent holder can only enforce his patent against parties that actually copied the invention, the patent holder has a strong incentive to disclose in a way that makes copying easier. Perhaps patents would look less like this IBM patent for "[s]ystems and articles of manufacture for managing metadata associated with a data abstraction model abstractly describing data in a database" (ugh) and more like this Ruby on Rails tutorial, which helpfully includes screenshots and code samples. This improved disclosure would make it a lot easier to prove dependence. For example, if your patent includes code samples, an infringing product might contain code suspiciously similar to your own. Or if you included useful links, the infringer's browsing history might reveal frequent visits to those sites. And so on.

Focusing on the actual usefulness of a patent would also address another concern with an independent invention defense -- that trolls would spam businesses with patents to demonstrate that business had notice of the patents, and that businesses would avoid liability by forbidding their employees from reading patents altogether. If a patent plaintiff had to show not merely that the defendant knew about the patent, but that the patent was actually useful to the defendant, the trolls would be out of luck. Usefulness is not part of their strategy. Likewise, if patents were useful, many businesses would take advantage of them. Independent invention, like all invention, takes time and money. So long as it's cheaper to license than to independently invent, (smart) businesses will choose to license.

Dealing with Causation Problems

A related concern with proving independence is that nothing is truly independent. As Mike often points out, innovation isn't about creating something entirely out of the blue but it is about taking existing ideas and improving them. How then do you prove independence when the innovative process is so often about copying? And what if earlier patents did contribute to your invention, but the contribution was infinitesimal?

As it turns out, this is also a familiar problem for the legal system. It's very similar to questions of causation. Traditionally, a defendant was only liable if his actions caused the plaintiff harm -- that is, but for the defendant's actions, the harm would not have occurred. Likewise, you might say a later invention is dependent on a prior invention if the later wouldn't have been invented when it was but for the prior.

The but-for test has some obvious problems. Suppose two campers start fires on opposite ends of a forest at the same time, and both fires spiral out of control and burn down the forest. You can't say, but for the first fire, the forest wouldn't have burned down, because the second fire might have caused the same amount of damage. Or suppose a liquor store clerk sells alcohol to a minor, who is then caught by her morally uptight mother, who is in turn so mortified than she runs outside and is struck by a speeding driver. But for the sale of the alcohol, the mother would not have been hit, but it seems silly to blame the liquor store clerk for that.

The legal system basically addresses this problem by using open-ended language and granting discretion to judges and juries on edge cases. Thus, in the case of the forest fire, a jury could hold both campers responsible because each fire was a "substantial factor" in the burning of the forest. And in the case of the uptight mother, a jury could give the liquor store clerk a pass, because the liquor sale was not the "proximate cause" of the mother's injuries. Alternatively, the legal system may give judges and juries the discretion to recognize differing degrees of fault and adjust damages accordingly.

As with any system that defers to personal judgment, some decisions may seem arbitrary, but for the most part, causation problems have not crippled the legal system. And if such problems were encountered with an independent invention defense, the outcomes would probably be less arbitrary than in tort cases. For instance, there's often no objective basis for saying a driver is 60% at fault in an accident as opposed to 70%. But, in a patent case, records of profits, research expenditures, and the costs of alternatives provide evidence of how much a given patent actually mattered.

Making Patents Useful

Patent advocates might object that an independent invention defense would introduce greater uncertainty into the patent process, and that it would hurt small (independent) inventors more than large corporations. First, an independent invention defense, depending on how it's drafted, could potentially reduce uncertainty in other areas. For instance, how much one invention contributed to another is less subjective than asking whether the invention was "obvious". Second, most legal changes tend to introduce uncertainty, at least initially. And yes, smaller inventors will be affected more simply because they're less able to afford expensive lawyers. But sometimes uncertainty is necessary to achieve reasonable legal outcomes. Adding a self-defense exception to laws against murder introduces uncertainty as to how a case will turn out. But nearly everyone agrees that some right to self-defense should exist, even if the boundaries of that right are unclear.

Moreover, these objections are often less about any issues with the defense itself and more about objecting to any change that makes patents less valuable. Likewise, some Techdirt readers would object solely on the basis that independent invention falls short of simply abolishing all patents (or at least all software patents). All I can say to either position is that the independent invention defense reflects the view that patents are currently too powerful, but that maintaining some level of patent protection makes sense (or is more politically palatable than total abolition). It's in line with Judge Posner's thinking that patents are useful when inventors face high capital expenditures to create, but low barriers to copy -- an independent invention defense limits infringement to actual copying. It also addresses Tim Lee's concern that the boundaries of software patents aren't clearly marked -- an independent invention defense would protect programmers who inadvertently infringe on those patents. And it solves the one-size-fits-all problem with patent lengths -- more obvious patents will last only a short while before they're independently invented, while less obvious ones will last a bit longer.

As with all laws, the devil is in the details. An independent invention defense would have to be drafted carefully. But the basic legal concept isn't new. It's feasible, and it could go a long way towards curbing patent trolls.

Mike has been advocating an independent invention defense against patent infringement for quite some time now -- that is, in the absence of actual copying, a patent holder should not be able to sue a subsequent innovator. There are plenty of posts going over the rationale for such a defense, and I don't want to rehash those arguments when you can just click on those links above and read the originals.

If it's a defense, then I don't see how it would stop a patent holder from suing. Nor do I understand your case for why you think this defense is needed. Can you explain?

Re:

I tend to agree. It would be more accurate to describe independent invention primarily as a "right", not a "defense" -- a right that only ever needs to be explicitly claimed as a defense if one is sued.

Re: Re:

Technically, yes, you could look at it that way.

When I say "independent invention defense", think of it as shorthand for "a legal doctrine that permits a defendant to win a patent infringement suit by showing that they came up with their product independently of the patentee's efforts".

Under current law, there's nothing wrong with re-inventing a patented invention. But if you manufacture, use, or sell your invention, you're liable to be sued, even if you did it entirely on your own. An independent invention defense would limit your liability.

Response to: average_joe on Oct 24th, 2012 @ 4:02pm

Deterrence. A patent holder can always sue, but he is less likely to if he thinks the defendant can raise a valid defense.

You should check out the posts I linked to in the first paragraph for the rationale. In a nutshell though, under current law, businesses can successfully be sued for infringing upon a useless patent they've never heard of. If there were an independent invention defense though, a business that proved they came up with their product without copying the patent would be legally protected.

Re: Response to: average_joe on Oct 24th, 2012 @ 4:02pm

They'd be protected in that they might win the case, but they wouldn't be protected in that they could still be sued into oblivion by trolls. The addition of the defense would make the trial longer and more expensive, since the plaintiff would still have to prove its case first and the defendant would still make all of the other available defenses.

Re: Re: Response to: average_joe on Oct 24th, 2012 @ 4:02pm

Most trolls are financially motivated. They're trying to maximize profit, not destroy innovators for the heck of it. Keep in mind that trolls have to pay legal costs too. If the odds of them recouping that cost are low, many won't bring suit.

That said, yes, some trolls will still use the cost of frivolous litigation to force a settlement. Something like the equivalent of an anti-SLAPP law for patent suits might be helpful here.

But an independent invention defense would still be helpful for businesses though. The amount of money a troll can demand in settlement goes way down if it's unlikely to win at trial.

Gosh, that's awfully complex and iffy.

And if were in place, then means to cheat would be contrived -- that's actually easy with more complex systems.

So yet again, here's my simple notion: require a working physical model as they used to WAY back. That automatically rules out software patents, and rules out "broad" patents too. I suppose, for your slant here, that physical models (particularly in stages) would provide enough information to distinguish direct copying from independent development.

By the way, the few patents I've read NEVER give enough details to actually make one of the gadgets (which may not in fact exist, another reason to require working models). -- Though some are so obvious that are right in the title, such as the one that puts an MP3 player on a washing machine.

Re: Gosh, that's awfully complex and iffy.

On complexity, yes, there is a cost. But my argument is that the cost is manageable.

First, the complexities stem from known problems that lawyers have been handling for centuries. Think of it this way -- modern computers are ridiculously complex. Yet we use computers for rather important tasks all the time without incident. Part of this is because much of the complexity has been abstracted out, and the abstractions are well tested. Likewise, a lot of the complexities with an independent invention defense can be abstracted out to existing legal problems with existing solutions.

Second, complexity in law doesn't necessarily create as much opportunity for exploitation as, say, complexity in software. Law can be much more fluid. It can contain open-ended language that lets courts and lawyers fill in the details. And it can permit courts and lawyers alter those details in response to an exploit. The point of my post was not to architect a complete system for deciding independent invention, but to show that courts and lawyers have a number of tools with which to respond to various challenges.

Third, "cheating" in the patent trolling context isn't binary. It's not like hacking, where a single security flaw can be your undoing. This is really about tilting the cost-benefit analysis against trolling. A few trolls may still go for it, but if it's no longer worth it to troll on average, that's pretty good as far as public policy goes.

Compliments to OOTB and a_j

I am a regular reader and infrequent commenter on this blog and I want to compliment both of you for refraining from attacking the author of this post and providing commentary that promoted logical and sane discussion.
Kudos to both of you.

Good to see others making this argument.

I have bent many an ear making this point in discussions focusing on what would be good law. Most people start off thinking whoever does something first should own it and everything after is a copy. I find this attitude is not always strongly held as it can often be changed with histories of famous inventions and scientific discoveries which were for the most part found by multiple people at close to the same time.

I wonder if the practicality of determining independent invention argument is real at all. I regard it as stone walling out of self interest. As you point out we ask our courts to solve equally hard problems in other areas of law.

The strongest argument I see for patents preempting independent invention is the motivation to disclose at all. People afraid of weak patents may choose to keep their work secret. History shows us a great deal of valuable knowledge was lost in antiquity due to secrecy. Medieval guilds closely guarded their secrets thoroughly blocking innovation. Archeology has found many a fine artifact for which the methods of construction were lost to time. Safe, I think, to attribute many of those lost arts to secrecy.

While I think taking away the motivation for secrecy is a valid argument I think it is less of a problem than excessive patents. A wise profit maximizing actor will recognize simply being first to market is enormously valuable even if there is no patent protection. Secrecy will not survive serving the market. Better to have a non-preemptive patent good against genuine copies than sit on a secret which doesn't make money while it stays secret.

The Wright Brothers didn't exactly make their fortune commercializing aviation. They spent their time on patents while the world moved forward.

Another reason to weigh the secrecy risk less is just how useless patents really are in teaching us how to do things. Reading patents is good for fighting patent suits, not making things work.

Re: Good to see others making this argument.

I find this attitude is not always strongly held as it can often be changed with histories of famous inventions and scientific discoveries which were for the most part found by multiple people at close to the same time.

It seems to me that if multiple inventors have hit on the same invention around the same time, that is a strong indication that the invention is not patentable at all as it's obvious to practitioners in the art.

Graham v. John Deere

I thought about this post when reading Graham v. Deere for my patent law class. Specifically, this passage made me think of your general argument that patent law should not shy away from standards just because they are difficult to apply:
"What is obvious is not a question upon which there is likely to be uniformity of thought in every given factual context. The difficulties, however, are comparable to those encountered daily by the courts in such frames of reference as negligence and scienter, and should be amenable to a case-by-case development."